IP Case Law Analysis

What “Fame” Means in the Likelihood of Confusion and Dilution Contexts

February 21, 2012

What This Means To You

When arguing likelihood of dilution to oppose an application, be prepared to present a substantial amount of evidence showing your mark was famous among the general population prior to the application’s filing.

Do not attempt to show similarity of goods or services for likelihood of confusion purposes if you have no evidence showing such goods or services have been sold or marketed.

Ensure your corporate annual reports are publicly available online, making them admissible as evidence before the Trademark Trial and Appeal Board (TTAB).

Overview

In Coach Services Inc. v Triumph Learning LLC, the US Court of Appeals for the Federal Circuit (Federal Circuit) held that fame of a senior mark alone is not enough to support a finding of likelihood of confusion and also demonstrated the difficulty in proving fame for the purposes of dilution.

In addition, the Federal Circuit clarified that the form in which corporate annual reports are submitted into evidence may govern whether they may be accepted under a notice of reliance. The court also affirmed that proving secondary meaning requires continuous, exclusive use up to the date on which the issue is being considered.

Case Background

Coach Services opposed Triumph Learning’s applications for the mark COACH for educational materials used to prepare students for standardized tests, arguing likelihood of confusion. The TTAB dismissed the opposition, finding no likelihood of confusion or dilution, and stated that although the COACH marks were merely descriptive for test coaching services, they had acquired secondary meaning.

Coach Services appealed to the Federal Circuit.

Decision Analysis

In affirming the TTAB’s holdings, the Federal Circuit noted that fame alone cannot lead to a likelihood of confusion and again found that there is a high bar to demonstrating fame for dilution purposes.

The Federal Circuit held that, although the COACH mark was clearly famous for the purposes of likelihood of confusion, other factors—such as lack of relatedness between the goods and services—militated against a finding of likelihood of confusion. On the other hand, the Federal Circuit found that evidence of even substantial sales and marketing were not enough to show fame for the purposes of dilution when there was no evidence as to the number of persons to whom those sales were made and there was no evidence that the marketing was effective.

The Federal Circuit further held that even a survey showing high levels of brand awareness in an opposer’s key demographic could not prove fame for dilution purposes because it did not show recognition among the population in general.

Finally, the Federal Circuit held that the TTAB erred by failing to consider evidence of third-party usage of COACH that occurred after the filing of the applications, which could cut against a finding of secondary meaning. The court stated that, for the purposes of secondary meaning, “[a]cquired distinctiveness and buyer recognition [should] be tested in an opposition proceeding as of the date the issue is under consideration. The filing date is not a cutoff for any evidence developing after that time.

Takeaways

To successfully oppose a trademark application based on a claim of dilution, you must show that your mark was famous in the minds of the general public before the filing date of the subject application. This is an incredibly high bar.

Corporate annual reports that are made publicly available online are easier to submit as evidence.

While fame is a continuum for the purposes of likelihood of confusion, a high degree of fame alone is not enough to succeed in such a claim.

When attempting to show that a mark has acquired secondary meaning, be prepared to show exclusive and continuous use up to the date on which the issue is being considered.